Reprinted with permission from INTA Bulletin, Vol. 66, No.
9 – May 1, 2011, Copyright © 2011 International Trademark Association.
Jan-Peter Ewert
Unverzagt von Have, Hamburg, Germany
David Weslow
Wiley Rein LLP, Washington, D.C., USA
A trademark practitioner charged with obtaining
legal protection beyond national boundaries
often is in a more comfortable situation
than colleagues in many other fields of the law.
A system of international treaties and organiza-
tions supports the practitioner in transferring
the client’s rights from its home jurisdiction
to others and in enforcing such rights.
This support may, however, inspire a false
sense of security and simplicity. Intellectual
property rights may bear the same name
across jurisdictions and yet have fundamentally
different legal requirements, scopes of
protection, and means and procedures for
enforcement. These differences present both
challenges in providing best practices advice
and significant opportunities for obtaining favor-
able results by playing the different involved
jurisdictions to one’s advantage.
This article provides an overview of some
issues to bear in mind when one is faced with
a case potentially involving both Europe and
the United States and how forum shopping can
benefit the trademark owner.
What Is Forum Shopping?
Forum shopping refers to the practice of
choosing the court or jurisdiction that has the
most favorable rules or laws for the position
being advocated. A party can forum shop
when more than one court has jurisdiction
over the dispute, choosing the court that gives
it an advantage over the opposing party. The
forum most favorable to the party’s case is not
always the forum that is most relevant to the
dispute.
Parties forum shop for a variety of reasons.
Often a plaintiff will choose to file in his home
jurisdiction because of reduced travel costs
and the potential for the fact-finder to be
sympathetic to a local plaintiff. Sometimes
the laws, procedures or tendencies are more
favorable in one jurisdiction than another, so
a party will choose the jurisdiction that will ap-
ply the more favorable law or protocols to the
case. Remedies differ between jurisdictions,
so a party may choose a forum that offers the
largest damage awards or the potential for
injunctive relief or monetary damages, which,
for example, are not available from the Trade-
mark Trial and Appeal Board of the U.S. Patent
and Trademark Office (USPTO). Courts also
deal with their cases at varying speeds, and
a plaintiff may prefer one court over another
because cases proceed faster in that court,
while a defendant may try the opposite tactic
in order to stall proceedings.
Whatever the specific reason, the goal of
forum shopping is always the same: to gain a
perceived or actual advantage in litigation by
benefiting from the differences in the laws,
rules and tendencies of the courts with poten-
tial jurisdiction over the litigation.
The foundation for successful forum shopping
in trademark matters, however, is laid long
before litigation or opposition proceedings be-
gin. It results from the limitation of trademark
rights to territories in which protection has
been obtained by formal registration or other
means (for jurisdictions that do not require
registration for trademark rights).
Laying the Foundation:
Important Differences in
Trademark Prosecution
The conglomerated nature of the European
Union provides for significantly more routes for
obtaining trademark protection than do the
laws of more unitary territories, such as the
United States.
The numerous different methods for obtaining
the equivalent of a common law trademark
within the European states are beyond the
scope of this overview. It is, nevertheless,
worthwhile to note briefly the different sources
of registered trademarks in Europe, namely
national trademark registrations in individual
European countries, Community trade mark
(CTM) registrations valid for the entire EU and
international extensions of existing trademarks
via the Madrid System.
For entities based in the United States, by far
the most common way of obtaining trademark
protection in Europe is registering a CTM. This
is in most cases a sensible choice, given that
the associated costs are a fraction of those
involved in obtaining individual national regis-
trations in all European nations.
Registering a new CTM also provides the option
of obtaining more extensive protection
than extending an existing U.S. registration to
Europe by way of the Madrid System. For one
thing, the list of goods and services acceptable
for CTMs and national trademarks in EU
countries can include general terms that would
likely be refused by the USPTO, such as “busi-
ness consulting.” In addition, European trade-
mark law does not require a declaration of a
“bona fide intent to use.” Instead, the descrip-
tion of goods and services may be generously
expanded to cover any products for which the
applicant has even a remote interest.
Some situations can, however, make reliance
on a CTM a less-than-optimal choice for
trademark protection in Europe, because CTMs
can be vulnerable. An opposition from even
the smallest EU member state may stall the
registration for years and possibly bring down
the entire trademark for all of the Community,
even if the older right has been registered or
used only in a single EU country, such as Malta.
In such cases, the CTM may be converted
into individual national trademark applications
in the other member states, but this is a costly
and complex process.
Registering a national trademark in a European
country in addition to an identical CTM
is comparatively cheap and simple. While this
may seem redundant, the advantages are
clear: A national trademark may be opposed
only based on rights valid in its country of regis-
tration, not just any EU country. Also, several
national registers publish the trademark for
opposition only after it has been fully registered
and come into force. For instance, while
a CTM enjoys no protection during opposition
proceedings, a German national trademark is
fully protected for all the years that an opposition
proceeding may be pending.
In practice, this means that once a CTM
applied for in conjunction with a German trade-
mark is opposed, the applicant may analyze in
which EU countries the opponent owns rights
and extend the German trademark’s protection
to other countries, thereby achieving full
protection for the duration of the opposition in at
least some countries of interest. When
weighing the added protection provided by
an additional “backup” national registration
against the expense of in-depth research and
prosecution, the costs of applying for a backup
national trademark are rather low, being regularly
less than EUR 1,000.
Taking Action: Forum Shopping
in Trademark Litigation
Most jurisdictions provide legal venue in the
place in which a trademark right has been
violated. As long as the trademark proprietor
has properly prepared the playing field, this will
regularly provide him with a choice of numerous
jurisdictions.
Within the United States, the differences
between the laws of the various states are
comparably minor for trademark cases, but
even this will not keep plaintiffs from seeking
courts with a perceived or actual history of rulings
in their favor. There are even specialized
service providers that analyze the percentages
by which individual judges in U.S. federal
courts rule in favor of plaintiffs or defendants
and rule in favor of or against efforts to obtain
injunctive relief. Experienced trademark litigators
may also have a sense of which judges
are more likely to, for example, issue ex parte
seizure orders and/or allow proceedings to be
sealed for a limited time or purpose.
By comparison, procedural and material
law differ much more significantly between
individual EU member states, not to mention
between EU countries and the United States.
In this context, it should be noted that while
forum shopping is most commonly associated
with the role of the plaintiff, defendants occasion-
ally have the opportunity to forum shop
as well. Under U.S. law, defendants may under
certain circumstances choose between a state
court in which the plaintiff filed the action and
a federal court to which the defendant has the
option to remove the action. Would-be defendants
that have received a cease and desist
letter may also have the option of initiating a
declaratory judgment action in a jurisdiction of
their choosing.
Similar choices exist for defendants in certain
EU countries. In Germany, for instance, a
defendant sued before a general civil section
of a Regional Court (Landgericht) may have
the case removed to a section of the court that
is competent to hear commercial matters. This
is a particularly interesting option if the civil
section has already expressed its legal opinion
in favor of the plaintiff.
That is not the end of a defendant’s options,
however. Not only do certain European jurisdic-
tions allow the recipient of a warning letter to
sue the sender for a declaratory judgment, but
the court chosen in such a declaratory action
may indeed take precedence over the court
chosen by the owner of the actual claim in the
corresponding suit for forbearance, disclosure
or damages.
This strategic move on the part of prospective
defendants obtained infamy under the
name “torpedo suit” or “Italian torpedo.” The
reference to Italy derives from the classic
constellation in which a prospective defendant
in a jurisdiction with comparatively swift relief
(e.g., Germany) would file a suit for declaratory
judgment in a jurisdiction with comparatively slow
relief (e.g., Italy) to stall the proceedings
against him and therefore extend the time in
which to exploit the other party’s intellectual
property, sometimes by several years. The tor-
pedo suit tactic has also been used in recent
years by domain name owners that have lost
UDRP proceedings and then initiated litigation
in countries such as India for the apparent pur-
pose of delaying implementation of the UDRP
panel’s order that the domain name(s) in ques-
tion be transferred to the trademark owner.
These days, courts are increasingly aware of
this issue, and adequate action on the part of
the trademark owner may foil a defendant’s
torpedo suit. However, this requires the trade-
mark owner to be aware of the issue, aware of
the solution and able to make quick decisions.
The remedies issued by courts in different
jurisdictions will vary substantially as well. For
example, U.S. federal and state laws may provide
for monetary damages awards in amounts
unthinkable in most European jurisdictions.
At the same time, German law is unusual in
providing automatic compensation for statutory
attorneys’ fees to the winning party in
litigation and even for the preparation of a
warning letter. French relief has an advantage
over German relief in that where an existing
injunction has been violated, the resulting fine
may be ordered paid not to the state but to the
plaintiff.
Thinking Outside the Box: Obtaining
Relief Without Trademarks
Where trademark protection is lacking, good
trademark counsel goes beyond trademark law
and considers all types of intellectual property
rights that may be involved in an opponent’s
actions and may lead to relief for the plaintiff,
even more so as one country’s law may
provide for intellectual property rights that do
not exist (or do not exist anymore) in another
jurisdiction.
For example, works that are in the public domain
according to U.S. copyright law may still
be protected in many European jurisdictions.
This includes, without limitation, works by U.S.
government employees, as well as practically
every movie in the public domain in the United
States, ranging from Buster Keaton classics to
the original Dawn of the Dead.
Other intellectual property rights do not merely
face different term limitations but in fact simply
may not exist in other jurisdictions. A well-known
example is the unregistered Community design
right, which may be used as a basis for claims
in the EU in cases in which there is neither
trademark nor registered design protection for a
product shape.
Conclusion
While the involvement of attorneys from
several jurisdictions may increase the cost of
initial legal counsel, forum shopping often will
provide strategic opportunities beyond what
is possible in the trademark owner’s home
jurisdiction.
Whether the merits outweigh the costs of forum
shopping must be assessed in each individual
case. Given the potential for significant
substantive and strategic advantages,
as highlighted above, this is a question that
needs to be asked in any case that may poten-
tially involve several jurisdictions. ■